Supreme Court delivers key ruling on post-sale confusion in trade mark infringement - Iconix v Dream Pairs

On 24 June 2025 the Supreme Court handed down its judgment in the Iconix case (Iconix Luxembourg Holdings SARL v Dream Pairs Europe Inc. and Top Glory Trading Group Inc). At the heart of the case is whether the “DP Logo” featured on Dream Pairs’ footwear infringed the well-known UMBRO mark owned by Iconix, and specifically whether post-sale confusion could establish infringement under section 10(2) of the Trade Marks Act 1994 (“TMA”).

Nature of the dispute

Iconix, the owner of the UMBRO sportswear brand, had commenced proceedings in July 2021 against Dream Pairs Europe Inc. and Top Glory Trading Group Inc., who market footwear using the DP Logo as depicted below.

UMBRO Trade Marks	DP Logo

Iconix claimed that the DP Logo was similar to its own registered UMBRO trade mark, resulting in:

• a likelihood of confusion among consumers under section 10(2) of the TMA; and
• that the DP Logo was detrimental to the distinctive character and/or reputation of the trade mark; and/or took unfair advantage of the distinctive character or repute of the trade mark under section 10(3) of the TMA.

The approach of the High Court

At first instance, in the High Court in March 2023, Miles J held that only a low degree of similarity existed between the UMBRO and DP marks, observing that the average footwear consumer pays a moderate level of attention to branding. Although acknowledging that UMBRO is widely recognised and that the brand had acquired distinctiveness, Miles J found that Dream Pairs’ Amazon listings and product labelling made it abundantly clear that Dream Pairs was a separate brand. Concluding that there was no likelihood of confusion at the point of sale or thereafter, the High Court rejected Iconix’s claim under section 10(2) of the TMA. Similarly the section 10(3) claim was dismissed, highlighting that Iconix could not demonstrate any of the requisite forms of damage.

The Court of Appeal’s decision

Iconix appealed to the Court of Appeal, which reversed the first instance decision in January 2024. The Court of Appeal rejected the trial judge’s finding of only minimal similarity, placing particular emphasis on the different angles from which footwear can be viewed, especially in a post-sale scenario where a bystander might observe the logo when someone also is wearing the shoes. In these circumstances, the Court found a moderately high degree of similarity between the trade marks, sufficient to generate confusion. While it accepted that point-of-sale confusion was unlikely, it held that such confusion was not necessary for the purposes of section 10(2) of the TMA. On that basis, the Court of Appeal concluded that post-sale confusion alone could result in a finding of trade mark infringement, thereby allowing Iconix’s appeal under section 10(2) of the TMA. The finding that Iconix could not succeed under section 10(3) of the TMA was undisturbed.

The Supreme Court’s judgment

Dream Pairs appealed to the Supreme Court. In its decision handed down on 24 June 2025, the Supreme Court allowed the appeal on one out of the three grounds:

• The Similarity Issue:

The Supreme Court did not challenge the original considerations of similarity by Miles J. It was held that post-sale circumstances can be taken into account to establish similarity and the degree of similarity between trade marks provided these are “realistic and representative” circumstances.

• The Confusion Issue:

Dream Pairs’ submission that only post-sale confusion affecting or jeopardising the essential function of a trade mark as guarantee of origin at the point of subsequent sale or a subsequent transactional context can amount to an actionable infringement was rejected. The Supreme Court agreed with the original consideration of the likelihood of confusion made by Miles J and ruled that a trade mark “continues to identify origin even after sale”. The Supreme Court confirmed that the likelihood of confusion can arise as a result of post-sale confusion even if there was no such likelihood of confusion at the point of sale. It was concluded that there is no reason to impose a restriction that only post-sale confusion affecting or jeopardising the essential function of a trade mark as a guarantee of origin at the point of a subsequent sale can amount to an actionable infringement.

The Court also rejected the submission that before actionable infringement occurs, the post-sale confusion must result in damage at the point of sale. Damage to the origin function of a trade mark occurs simply if an average consumer is confused about the origin of the goods.

• The Court of Appeal’s role:

While rejecting Dream Pairs’ main legal points and recognising that reasonable judicial views might differ, the Court ruled that since this case did not concern irrationality, error of principle or of law, the Court of Appeal was not justified in substituting their own views. It is on that ground that the appeal was allowed, effectively resulting in the commercial outcomes reached after the original trial.

Key takeaways

This judgment highlights the importance of brand owners giving serious consideration to similarities of marks in post-sale circumstances that are realistic and representative and not limiting their assessments to the point of sale. Thought should be given to perceptions marks create even after sale, a consumer’s confusion arising at any point may be enough for infringement to arise. Although the test for trade mark infringement has always been contextual, this judgment seemingly expands the potential infringement scenarios and may raise questions as to whether particular circumstances that would otherwise negate the risk of infringement (disclaimers, nature of purchase channel or environment etc) will continue to be operative in a post-sale context.

If you would like to discuss any aspect of the judgment or the relevant law, please get in touch.

This article was co-authored by Shaina Haria and Natalia Martosinska, Trainee Solicitors at CMS Cameron McKenna Nabarro Olswang LLP.